Lettuce Turnip the Beet: When puns are “functional”

In LTTB LLC v. Redbubble, Inc., plaintiff LTTB, an online apparel company, contended its success was “largely due to public fascination with its Lettuce Turnip the Beet trademark,” and alleged that defendant Redbubble’s sale of products featuring the phrase “Lettuce Turnip the Beet” infringed its mark, 18-cv-00509-RS. Redbubble, an online marketplace selling products made by independent artists, argued that LTTB was not entitled to preclude others from using the “Lettuce Turnip the Beet” pun absent any evidence of source confusion. On July 12, 2019, the Northern District of California issued its decision granting summary judgment in favor of defendant Redbubble, finding that LTTB did not have an exclusive right to sell products displaying the pun “Lettuce Turnip the Beet,” and that LTTB therefore did not have a viable trademark infringement claim.

The court’s decision turned on its application of the “aesthetic functionality doctrine,” a controversial trademark law principle unevenly applied by federal courts. See McCarthy on Trademarks and Unfair Competition § 7:80 (5th ed.). Under the aesthetic functionality doctrine, when goods are bought largely for their aesthetic value, their features may be functional – if a feature is an important ingredient in the commercial success of the product, the interest in free competition permits its imitation in the absence of a patent or copyright. SeePagliero v. Wallace China Co., 198 F.2d 339 (9th Cir. 1952). The issue in LTTB was whether LTTB had a viable infringement claim where the alleged infringing products merely displayed the pun “Lettuce Turnip the Beet” and did not otherwise include any indication that they were produced by LTTB. In other words, was the pun “Lettuce Turnip the Beet” a functional feature permitting imitation? The LTTB court explained that while the Ninth Circuit’s modern application of the “aesthetic functionality” doctrine has been more limited, the circumstances of the LTTB case “undeniably” called for the application of the aesthetic functionality doctrine.

The court in LTTB concluded that no reasonable trier of fact could find that consumers sought to purchase products based on LTTB’s reputation, rather than mere interest in the pun “Lettuce Turnip the Beet.” The court found that LTTB’s products were simply the vehicle for distributing the claimed “trademark” on the pun “Lettuce Turnip the Beet” rather than the other way around, where a trademark is used to identify the source of the goods. The court also clarified, however, that nothing in its ruling precluded LTTB from enforcing its rights against a party that markets a product misleadingly suggesting LTTB as the product’s source.

In another noteworthy case involving the ability to enforce trademark rights as to a pun or play on words, Beyoncé Knowles-Carter and BGK Trademark Holdings, LLC dismissed their trademark infringement action in the Southern District of New York against defendant Feyonce, Inc., an apparel company marketing its FEYONCE-branded merchandise toward the engaged-to-be-married. Knowles-Carter v. Feyonce, Inc., 16-CV-2532 (AJN). Knowles-Carter and BGK had alleged that defendant’s Feyonce-branded merchandise infringed the famous BEYONCE trademarks; Feyonce, Inc. disputed the infringement allegation and argued that FEYONCE was not confusingly similar to the BEYONCE marks. Whereas the LTTB decision turned on whether the plaintiff had an exclusive right to use a pun in its product names, the Feyonce court discussed whether the defendants’ use of a pun was sufficient to dispel confusion with plaintiff’s nearly identical mark.

Before ultimately voluntarily dismissing their claims, plaintiffs Knowles-Carter and BGK Trademark Holdings moved for partial summary judgment as to their trademark infringement claims, which was denied. The court explained that the “critical question” was “whether a rational consumer would mistakenly believe FEYONCE products are sponsored by or affiliated with BEYONCE products.” In other words, was the pun was sufficient to dispel a likelihood of confusion among the consuming public? The court found that the answer could be yes.

While the court could not conclude that FEYONCE rose to the level of a parody of BEYONCE, it explained that “even a pun on an existing mark that does not contain an expressive message may avoid infringing if it is adequately distinguishable from the existing mark by virtue of pun.” Id. citing Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC, 221 F. Supp. 2d 410, 417 (2002).

In denying Beyoncé’s motion for summary judgment as to the trademark infringement claim, the court reasoned that “even though the marks were “certainly extremely similar in text, font, and pronunciation,” “because of the additional connotation of ‘fiancé,’ a reasonable jury could conclude that consumers looking for BEYONCE products were “unlikely to select a FEYONCE product inadvertently.” By choosing a mark that sounds identical to the word “fiancé,” Defendants could be said to have “purposefully differentiated their products by eliciting a mental association with a word that has a dictionary definition unrelated to Beyoncé.” Defendants’ mark could be considered a pun because it was clearly a reference to Beyoncé but was “just as clearly a signifier of a specific relationship status.”

FEYONCE’s play on words could dispel consumer confusion that might otherwise arise because of its facial similarity to the BEYONCE mark. The court emphasized that there is no likelihood of confusion “if the similarity [between the marks] merely results in an association between the products in a consumer’s mind, as opposed to confusion regarding the source, sponsorship, or affiliation of the products.”

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